RESPONSE TO AMENDMENT
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on December 22, 2025 has been entered.
Claims 1-4, 7 and 9-22 are pending in the application, claims 5, 6 and 8 have been cancelled.
Amendments to the claims, filed on December 22, 2025, have been entered in the above-identified application.
WITHDRAWN REJECTIONS
The 35 U.S.C. §112 rejections made of record in the office action mailed July 1, 2025 have been withdrawn due to Applicant’s amendment filed December 22, 2025.
The 35 U.S.C. §103 rejection of record in the office action mailed July 1, 2025 have been withdrawn due to Applicant’s amendment in the response filed December 22, 2025.
REJECTIONS
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-4, 7 and 9-22 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The limitation “an arithmetic mean roughness (Ra) of 0.74 µm or more…” is not supported by the specification and considered to be new matter. The instant specification on page 11, para. [0030] states that the arithmetic mean roughness (Ra) is 2.00 µm or less.
The instant spec. page 11, para. [0031]:
The Ra (arithmetic mean roughness) is preferably 1.90 μm or less, more preferably 1.80 μm or less, and still more preferably 1.75 μm or less, and the lower limit is preferably 0.10 μm or larger, more preferably 0.40 μm or larger, and still more preferably 0.60 μm or larger. When the Ra (arithmetic mean roughness) is within the above range, the matte effect and the dry and smooth touch are improved.
Therefore, the instant specification does not have support for the Ra value to be above 2.00 µm.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-4, 7, 9-14 and 17-22 are rejected under 35 U.S.C. 103 as being unpatentable over Norinaga (JP H069905 A) in view of Kiyoshi (JP 2009104076 A).
Regarding Applicant’s claims 1-4, 7, 13 and 20-22, Norinaga discloses decorative panels (para. [0001]-[0004]) comprising a matte coating (para. [0016]). The surface of the matte layer has an uneven shaped composed of irregular wrinkles (irregularities, fig. 1, para. [0006] and [0015]). The surface shape of the matte layer has a Ra of 0.7-2.0 µm, Rsm of 20-50 µm and a 60° gloss value of 2.0 or less (para. [0006]).
The irregular wrinkles are composed of a plurality of convex portions formed by a plurality of streak-shaped protrusions and a plurality of concave portions formed by being surrounded by the plurality of streak-shaped protrusions (para. [0015]).
Norinaga fails to disclose the skewness, kurtosis, and Rz.
Kiyoshi discloses an optical laminate with antiglare properties (para. [0009]]). The optical laminate has a skewness of 1 or less, kurtosis of 3 or less, and an Rz of 0.5-5.0 µm (para. [0006] and [0104]), which exhibits sufficient antiglare performance and can suppress the occurrence of white blur (para. [0009]).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use the skewness, kurtosis, and Rz values disclosed by Kiyoshi on the surface shape of Norinaga to improve the diffuse reflection/antiglare properties of Norinaga to suppress the occurrence of white blur.
The limitation “wherein the irregular wrinkles are formed by irradiating a resin composition for matting with light at a wavelength between 100 nm and 380 nm to form the surface of the matte layer forming the surface shape” is a method limitation and does not determine the patentability of the product, unless the process produces unexpected results. The method of forming the product is not germane to the issue of patentability of the product itself, unless Applicant presents evidence from which the Examiner could reasonably conclude that the claimed product differs in kind from those of the prior art. MPEP 2113.
It is noted that neither Norinaga nor Kiyoshi disclose the claimed ISO or JIS standards. However, one of ordinary skill would have expected that same or sustainably similar values for skewness, kurtosis, RSm, Ra and Rz with the claimed ISO or JIS standards.
Regarding Applicant’s claims 9-12, Norinaga discloses that the decorative panels comprise a base material in sheet form and the matte layer is provided over an entire surface of one side of the base material (fig. 1, para. [0011]). Alternatively, the paper, cloth, plastic metal or wood layer of Norinaga can be considered a decorative layer (para. [0011]).
Regarding claim 14, Norinaga fails to disclose the total light transmittance. One of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the light transmittance (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Regarding Applicant’s claims 17-19, Norinaga discloses that the matte layer comprises a resin and wrinkle formation stabilizer particle (para. [0013]). Norinaga fails to disclose the claimed parts by mass of particles. One of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the light transmittance (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Claims 15 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Norinaga (JP H069905 A) in view of Kiyoshi (JP 2009104076 A) and further in view of Iriyama et al. (US PG Pub No. 2018/0043669).
Norinaga and Kiyoshi are relied upon as described above.
Norinaga and Kiyoshi fail to disclose a decorative layer between the base layer and the matte layer.
Iryama discloses a matte article with excellent low gloss feeling, even when oblique light is incident on a surface of the sheet, diffuse reflection of the light is suppressed, the surface is less likely to look white when viewed obliquely, and a design represented on the sheet can be visually recognized; and the sheet has excellent designability (para. [0009]).
The matte article comprises a matte layer (ref. #8 and ref. #13), a decorative layer (ref. #4) and a base material (ref. #3). The matte article comprises a surface shape formed on a surface of the matte layer, which has an uneven shape composed of irregular wrinkles (irregular shape, para. [0023]). The irregular wrinkles are composed of a plurality of convex portions formed by a plurality of streak- shaped protrusions and a plurality of concave portions formed by being surrounded by the plurality of streak-shaped protrusions (para. [0026]). The matte article has an Ra of 0.7 µm or less and has a 60° gloss of the surface is preferably 10 or less (para. [0029]).
The matte layer is provided over the entire surface of one side of the base material (see figures). The decorative layer has a pattern selected from the group consisting of a wood grain pattern, a stone grain pattern, a fabric grain pattern, a skin grain pattern, a geometric pattern, a letter(s), and/or a figure(s) (para. [0038]). The base material is in a sheet form (para. [0033]).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to add a decorative layer between the matte layer and base layer of Norinaga decorative panel as taught by Iryama to improve the aesthetic design/look of the panel.
ANSWERS TO APPLICANT’S ARGUMENTS
Applicant’s arguments in in the response filed December 22, 2025 regarding the 112 and 103 rejections of record have been considered but are moot since the rejections have been withdrawn.
Applicant argues the limitation “the irregular wrinkles are formed by…” is, on its face, a product-by-process limitation, the claimed wrinkled pattern is only capable of being properly described and achieved using the irradiating light such that this language should be given patentable weight as a situation where the process step provides for an integral structural change which cannot be otherwise described. Applicants further notes a distinct structural difference in Figures 13 and 14 of the specification (which correspond to the comparative examples) as compared to Figures 7 to 12 (corresponding to the claimed invention).
Applicant’s argument is not found persuasive because claim 1 is not commensurate in scope with the examples in the specification. For example, in the examples disclose that the matte layer comprises a resin layer with a “wrinkle” formation stabilizer. Surface features such as “irregular wrinkles” can by imparted by different processes, such as transfer sheets with a pattern layer, molding, etching, etc. Since the irregularities disclosed in the combination of Norinaga and Kiyoshi meet the surface roughness parameters, they are deemed to be the same as the claimed “irregular wrinkles.”
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Ikegami et al. (US Pub. No. 2018/0251398) discloses a similar matted layer with low gloss and similar surface roughness properties.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/Alicia Chevalier/Supervisory Patent Examiner, Art Unit 1788 09/16/2026
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